PHOTO COURTESY SALVATORE LOSACCO. Photo of an atmospheric measuring tower with on-demand heating system in Atqasuk, Alaska, developed by SDSU faculty Donatella Zona and Walter Oechel. To license this technology, contact the SDSU TTO via email at [email protected], or via phone at (619) 594-0791.
hile each invention and creative work is different, the TTO has a plan to move ideas from campus to the marketplace. Deploying each creation incorporates some or all of the following steps in the Path to Commercialization, which the TTO will help tailor to suit the goals of the creator, the characteristics of the idea, the intellectual property involved, and the needs of the market. How can your idea be used to benefit the public? Contact the TTO today, and disclose new inventions and creative works here.
The TTO helps commercialize all inventions and creative works owned by the University (by way of the Research Foundation). Most of those creations are produced through the research efforts of faculty and students. Research is the fuel that drives innovation, and the TTO supports the by supporting SDSU faculty inventors and creators, and commercializing the products of their research. Student and staff ideas divorced from research may be candidates for the ZIP Launchpad, SDSU's on-campus accelerator.
Begin the commercialization process with disclosure via the TTO's Inventor Portal here or at the link below. SDSU faculty are required to disclose all inventions, creative works, and software arising from sponsored research, resulting from institutional support, or created during university employment. It’s important to initiate the disclosure process prior to publication or showing inventions to the public, as public disclosures can act as a bar to patent rights. Contact the TTO with any questions about whether or when to disclose. The TTO asks inventors to allow it at least 30 days to evaluate an invention. If the TTO doesn’t know about the invention, then it can’t help share the idea with the world!
The TTO evaluates all disclosed inventions, creative works, and software before ownership is determined and the commercialization process begins. As part of the evaluation, the TTO will speak with the creators, assess patentability and performa a prior art search (for inventions), research the market for the creation, examine the institutional support in creating the invention, identify potential licensees, and approximate the market potential of the creation.
The TTO will share the findings of its preliminary evaluation with the University Copyrights and Patents Committee, a neutral committee serving the interests of the faculty, University, and Foundation composed of 12 faculty and staff members. The UCPC will determine if it would be proper for the Foundation to own the IP, and recommend the actions to be taken. If it is determined that the SDSU Research Foundation should own the creation, the creators will be asked to complete an assignment with a week or two of the UCPC’s decision. The UCPC generally meets on the first Tuesday of every month.
Intellectual Property produced through sponsored research administered by the Foundation is assigned to the Foundation to comply with federal law and adhere to best practices. Read this document for a detailed explanation as to why assignment of IP to the Foundation is necessary.
If the UCPC recommends and the Vice President of Research Affairs accepts ownership of an invention or creative work, the TTO may file a patent application to protect the invention after assignment from the creators. A provisional patent application could be filed a few weeks or months after UCPC approval, depending on the circumstances. For copyrightable works that should be owned by the University, additional protection generally need not be sought as copyright protection is automatic upon publication.
In the U.S., provisional applications need to be converted within one year from the application date. Due to limited resources, the TTO is often unable to pursue the cost of conversion, hence why the initial evaluation and commercialization efforts are so crucial. If the TTO declines to convert or maintain a patent or patent application, they may relinquish control to the inventors.
Upon pursuing IP protection (if applicable), the TTO will speak with the authors or inventors and develop a plan for commercialization of the work by assessing the market, identifying potential licensees, and contacting industry and community partners. The protection and planning process begin soon after the UCPC meeting and is ongoing for the life of the creation. The Path to Commercialization has two main forms: licensing to a startup company or licensing to an existing entity.
In some instances, University creative works, basic research, or disruptive technologies are best commercialized by a startup company. In those cases, the TTO will work closely with the startup company to provide a license (or "permission") to use the technology. If a faculty member or team working with University IP wishes to create a startup company the TTO will work closely with them to help realize that vision by advising on the market potential, business opportunities, conflicts of interest, entity formation, service providers, and more. The TTO has many resources and partners to help startups relying on University IP with such things as mentorship, business planning, and funding, including the CSU I-Corps program and the ZIP Launchpad.
Often, forming a startup company is not the best path to successfully commercialize an invention or creative work. Another viable Path to Commercialization is licensing the technology to an existing third party. A license is a contractual document granting the licensee permission to use intellectual property. The TTO can exclusive or non-exclusive licenses, and then negotiates terms that suit the needs of the licensee, University, Foundation, and creators. In licensing transactions, the TTO aims to maximize public benefit by transferring the IP to market. The time to complete license negotiation and execution varies greatly on many factors, but timeliness is a priority of the TTO at SDSU.
Royalties earned from licensing transactions are split according to the University's Guidelines for Royalty Distribution, which include a 50-50 split on net royalties between the creators and the University's institutions (SDSU, SDSU Research Foundation, the creators' college, etc.), a generous share by both private and public standards. The TTO continues to manage creations into the future with a focus on a collaborative relationship with inventors. The TTO does its best to simultaneously serve the interests of the faculty and University while maximizing public benefit with limited resources.